Prestone had initially applied to register the trade mark Prestone in 1988 in class 1, which was subsequently granted. It then proceeded to file for the registration of the trade mark in classes 2, 3 and 4 which were also granted. They have also applied for various Prestone labels to be registered as trade marks in classes 1 and 4. These are pending.
It has to be noted that the Prestone trade mark has been used in Indonesia in respect of brake fluids and hydraulics brake fluids since 1986 and has since developed a reputation as a leading brand for that range of products due to Prestone’s marketing efforts. It can be said to be one of the leading brands for this product range in Indonesia.
It then came to the knowledge of Prestone that a local company known as PT Teguh Mulia Perdana was marketing and distributing a brand of brake oil and hydraulic brake oil bearing the trade mark Prestop.
Upon further investigation, it transpired that Negrat Kwandou had filed a trade mark application at the Indonesian Trademark Office for the trade mark Prestop in class 1 on March 14 2005.
In addition to the issue of the visual and phonetic similarities between Prestone’s Prestone mark and the Prestop mark, the Prestop products initially had a label which was substantially similar to the original Prestone label (old label).
